Law scholar slams universities over misuse of trademark law28Feb14

For decades universities, like their commercial counterparts, have been expanding their trademark portfolios, with the $4.6 billion industry for licensed merchandise an important revenue stream. However, one academic sector voice has accused such higher education institutions of misusing trademark law, going too far in a bid to create licensing revenue.

Previous examples of university enforcement include the University of Alabama’s trademark infringement suit against the owner of Mary’s Cakes & Pastries for selling cookies adorned with the ’A’ script and West Virginia University’s action against a company for selling shirts with wording the college claimed infringed their rights. More recently, a family-owned brewery received a cease-and-desist notice from Texas A&M after planning to sell ‘12th Man Skittles IPA’ on Superbowl weekend. Surveying such cases, Jacob Rooksby, assistant professor of law at Duquesne University’s School of Law, told World Trademark Review that, while the actions are not “totally frivolous or without merit”, he takes issue with the driving motivation for taking action: “My problem is that you could have a minimal amount of confusion and yet feel that you are harmed and that the law should vindicate you. That seems to be the direction some institutions are moving.”

In a recent article, Rooksby suggested that colleges are increasingly seeking trademark protection for marks beyond their names and athletics insignia purely to create revenue streams, rather than to reduce market confusion as to origin. Expanding, he told WTR: “I have no problem with wanting to protect a name, a logo and athletic teams, and those things can be monetised through licensing. But names of programmes, research initiatives, names of entire schools; these are things that don’t readily lend themselves to licensing opportunities and I see it as a waste and a misguided foray. All it does is clutter the market for potentially non-confusing use of those terms and phrases by others. Universities should not be in competition with actors in the commercial market.”

The flip side of the argument is that such institutions have properties they can legitimately protect and enforce, and in many instances commercialise to create much-needed funding. But Rooksby counters that corporations are responsible to their shareholders, and that what may make sense in the corporate world does not necessarily apply to universities where the public are the ‘shareholders’: “We should all have higher expectations for institutions than to simply behave as any for-profit actor would. Institutions are now coming up with slogans and catchphrases to market themselves and protecting those, just like a for-profit would, and suing those companies if they use something similar.”

One example cited by Rooksby involves computer giant Cisco Systems, which was sued by East Carolina University for trademark infringement over the tag phrase ‘tomorrow starts here’. Cisco had used the phrase on television to advertise offerings unrelated to education. “I see it as a suit that can be brought - it is not frivolous on its face of it as they have a registered trademark. But I think that any possibility of confusion is de minimis. Everyone is now saying, ‘You have to protect the IP’, without any sense of what the policy goals for an institution are. Many universities are going in the direction where they cannot articulate a defensible policy decision as to why they are seeking protection and you see universities being more forceful in their IP rights, not more generous in the sense of devoting these to the public or raising awareness about intellectual property.”

Rooksby’s full paper is available here. Whether you agree or disagree with the assertion that academic institutions should not exploit trademark rights in the same way as commercial organisations, the paper makes for an interesting read - and will likely provoke some emotive responses.